DETAILED ACTION.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 08 August 2025. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
Election/Restrictions
Applicant’s timely election without traverse of Group I, claims 1-8, in the reply filed on 02/24/2026 is acknowledged.
Claims 9-13 are withdrawn from consideration from further consideration pursuant to 37 CFR 1.142(b), as being withdrawn to a non-elected invention, and non-elected species of the invention, there being no allowable generic or linking claims.
Claims 1-8 are under examination and the requirement for restriction is made final.
Claim Objections
Claim 8 is objected to because of the following informalities:
In claim 8, line 3, “Chas” should read “has”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4-5, and 7-8 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
With regard to claims 4 and 7, the term “substantially” is a relative term and renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
With regard to claim 8, the phrase “substantially constant” is a relative term and renders the claim indefinite. The phrase “substantially constant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
With regard to claim 5, the term “the apparent mass” is a relative term which renders the claim indefinite. The term “apparent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Additionally, “the apparent mass” lacks antecedent basis and is interpreted to recite “an apparent mass”.
With regard to claim 8, the term “.sub.[ZP1]” to an otherwise definite expression (e.g. passage) extends the scope of the expression so as to render it indefinite, see Ex parte Copenhaver, 109 USPQ 1 18 (Bd. App. 1955). See also MPEP 2173.05 (B) (e). The term “.sub.[ZP1]” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Due to a lack of specificity regarding “.sub.[ZP1]”, it is unclear of the definition that would render those units. For examination purposes, the word .sub.[ZP1] is removed and “passage” stands alone.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Prosdocimi (US 5,607,889 A).
With regard to claim 1, Prosdocimi teaches an active mixture (reactive matrix) comprising manganese chloride (sorbent), vermiculite, and expanded natural graphite (ENG) (Example I, col 3, lines 57-59).
Please note, the intended use of the above claimed composition (i.e. “for the sorption/desorption of a heat transfer fluid...”) does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition.
In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting (see, e.g., MPEP 2112).
With regard to claim 2, Prosdocimi teaches active agents including salts of calcium chloride, manganese chloride, barium chloride, nickel chloride ([Table 2]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Prosdocimi (US 5,607,889 A).
With regard to claim 4, Prosdocimi teaches the mixture comprising 10 to 80 wt.% of active agent (sorbent) and 10 to 90 wt.% of expanded graphite, wherein the total of the components being equal to 100 wt.% (which overlaps the claimed ranges; col 6, lines 18-21).
Prosdocimi does not teach the claimed mixture to the level of specificity to be anticipatory.
With regard to the mixture, Prosdocimi teaches 10 to 80 wt.% of active agent and 10 to 90 wt.% of expanded graphite. This range overlaps with the claimed range of 76 to 87 wt.% of sorbent/active agent and 13 to 24 wt.% (the rest of the complement) of expanded graphite. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
With regard to claim 5, Prosdocimi teaches compressing the mixture to form a support structure having a graphite density between 0.02 and 0.5 kg/dm3 (which corresponds to 20 kg/m3 to 500 kg/m3 and overlaps the claimed range, Abstract)
With regard to the mass, Prosdocimi teaches 20 to 500 kg/m3 of expanded graphite. This range overlaps with the claimed range of 80 to 130 kg/m3 of expanded graphite. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP §2144.05(I). Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Claims 3, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Prosdocimi (US 5,607,889 A), as applied to claims 1-2 and 4-5 above, and further in view of Dick et al (WO-0248025-A2).
The teachings of Prosdocimi are disclosed above.
With regard to claim 3, Prosdocimi does not teach the claimed grain size.
In the same field of endeavor, Dick et al. teaches a lamellar pressed body (wafer) obtained by compressing a mixture of inorganic sorbent, binding agent, and a water content (Abstract). Dick et al. further teaches particle distribution size of less than 150 μm (page 5, para [2]), with a principal fraction of particles exceeding 45 μm (which would overlap the claimed grain size; page 5, para [3]). Dick et al. teaches that optimal performance is achieved when particles are substantially spherical and within the range. As a result, processing techniques such as deagglomeration, sieving, and sifting may be employed (page 5, para [3]).
With regard to the grain size, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify the sorbent grain size of Prosdocimi in accordance with the teachings of Dick et al. to optimize grain size to the claim. The person having ordinary skill in the art would expect such modification to improve future processing of Prosdocimi’s mixture.
With regard to claim 6, Prosdocimi teaches producing an active composite consisting of a support (expanded graphite), lamellar compound, and an active agent (sorbent) (Abstract). However, Prosdocimi does not explicitly teach the active composite is formed as a wafer.
In the same field of endeavor, Dick et al. teaches a lamellar pressed body (wafer) obtained by pressing a mixture of the inorganic sorbent, binding agent, and a water content (Abstract). Dick et al. teaches the wafer has high mechanical strength, low brittleness, and capability of effectively absorbing inorganic/organic gases (page 3, para [1]).
With regard to the wafer, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to compact Prosdocimi’s mixture to a wafer configuration, as taught by Dick et al. Therefore, a person having ordinary skill in the art would expect that such use constitutes a predictable application of known materials for their intended purpose of gas absorbents. The combination merely involves substituting one known application environment for another closely related one, yielding no unexpected results.
With regard to claim 7, Prosdocimi teaches a cylindrical active composite including an axial passage for gas diffusion (col 3, lines 65-68).
However, Prosdocimi does not teach that the axial passage is a coaxial interior passage.
With regard to the coaxial interior passage, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to configure the axial passage as a coaxial interior passage, as such a configuration represents a routine and predictable design choice for facilitating gas diffusion through cylindrical bodies. Therefore, a person having ordinary skill in the art would have reasonably expected equivalent functionality and results.
As stated above, Prosdocimi in combination of Dick et al teaches the wafer.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Prosdocimi (US 5607889 A) in view of Dick et al (WO-0248025-A2), as applied to claims 3, 6, and 7 above, and further view of Forrest (US 20100291328 A1).
The teachings of Prosdocimi and Dick et al are disclosed above.
With regard to claim 8, Prosdocimi teaches the active composite having a diameter of 15 cm (150mm) (col 3, line 66), but does not disclose the passage diameter nor axial thickness.
In the same field of endeavor, Dick et al. teaches wafers stacked having an inner diameter of 22 mm and thickness less than 350 μm (Example 9). The inner diameter would satisfy the inner passage; as well as, fall within the claimed range limitation. Dick et al. teaches despite their small thickness, the wafer still maintains its great strength and versatility to be installed within electronic components (page 3, para [15]). However, Dick et al. is silent to the axial thickness.
In the same field of endeavor, Forrest teaches wafers (paras [0022-0023]) comprising silicon carbide material (Abstract). Forrest teaches the axial thickness of approximately 5 mm to 356 mm (which overlaps the claimed range, claim [6]). Forrest further teaches that the thickness can be controlled by controlling certain variables; different articles require different thicknesses, which can range from less than 100 microns to over an inch (25.4 mm) or two inches (50.8 mm) thick (para [0007]).
With regard to passage and axial thickness, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention, to modify the dimension of Prosdocimi’s structure in accordance with the teachings of Dick et al. and Forrest to optimize the structural and functional characteristics. The cited references collectively teach a cylindrical material. Therefore, a person having ordinary skill in the art would expect such modification to represent routine optimization of known parameters and would have yielded predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 4-8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of U.S. Patent No.18/033495. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed below.US 18/033495 claims a reactive wafer consisting of a compact matrix for the sorption/desorption of a heat transfer fluid (FG), wherein the matrix comprises a mixture of sorbent (manganese chloride salt) and expandable natural graphite (ENG) in the same concentrations and ratios. ‘495 claims a reactive wafer consisting of the same shape, components, and size. The difference between the instant claims and ‘495 is the dependency of claims and a cold production device. However, the instant overlaps the ‘495 claims in the case where the claimed “overlaps or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Aja A Walker whose telephone number is (571)272-0037. The examiner can normally be reached Monday - Friday 7-5.
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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